One man's adventures in running, racing, and the pursuit of good health

Tuesday, September 3, 2013

The Grand Slam and the Basics of Trademark Law

The organizers of the “Grand Slam of Ultrarunning TM” have invented a new controversy in the last week.I’m a lawyer and an ultrarunner (retired), so I’ve gotten some emails asking my opinion on the subject.

Before I begin, here’s what the organizers are saying:

The Grand Slam of Ultrarunning™ Committee and the Wasatch Front
100 Mile Endurance Run Committee do not endorse, recognize, or ratify anyone or
their times involved in the so-called “unofficial” grand slam of ultrarunning.
Likewise we do not support, encourage, or sustain anyone involved in this
pursuit.

We continue to recognize, applaud, and award the runners who are legitimately
registered in and officially complete The Grand Slam of Ultrarunning™.

We also remind all who are observing or otherwise involved that the term “Grand
Slam of Ultrarunning™” is a trademark of The Grand Slam of Ultrarunning™
entity, and only those who are official entrants and finishers of The Grand
Slam of Ultrarunning™ are entitled to use the term “Grand Slam of
Ultrarunning™” in whatever form (including in any form that might cause
trademark confusion) in connection with their running endeavors.

The site was updated on 8/30/2013. I can’t be certain, but I
have a strong feeling the new ™ language is a direct jab at Nick Clark, who is
running the four races that comprise the slam without paying Steve Baugh an
additional $80 so that he can get a trophy and be recognized by Steve Baugh.Nick Clark, along with Ian Sharman, is one of
two men who will likely break the record for the fastest man to run those four
races in one summer. We can guess that Mr. Baugh doesn't like the idea that a potential record holder would circumvent the registration process he created for the event. Thus, the controversy.

Some trademark basics:

First, if someone uses the ™ symbol, that means that they
are asserting common law trademark rights or that they plan to register a
federal trademark in the future. If someone uses the ® symbol, that means they already possess a
registered federal trademark. Given that Mr. Baugh not used the ®
symbol, we can assume that no official (federal) agency has
yet recognized any trademark right to this name. Nor was I
able to find a registered state trademark in Utah. To my knowledge, the only
official filing on record is a “dba filing” under Steven Baugh’s name with the
Utah Secretary of State from October of last year. So there is no "Grand Slam of Ultrarunning Entity." It's just a name under which Steve Baugh does business.

As of now, Mr. Baugh is merely asserting that he has a trademark to the "Grand Slam" name. Most likely, no state or federal agency has yet confirmed such a claim.

What does all that mean? Basically, without federal or state
registration, Baugh has very limited enforcement rights under common law
trademark principles. What’s more, until
last week, it’s unclear whether anyone even knew that there was anyone who cared to
enforce this purported trademark (not registered locally or federally). That's certainly the consensus from the comments in this article. That's another strong argument against his ability to enforce such a right.

Second, even if Mr. Baugh does have a trademark right to assert, he
still cannot prevent “nominative” uses of the trademarked name.

What’s a nominative use?

The most famous case on this subject is Kids on the Block v. News America
Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).Basically, in this case, the New Kids on the Block sued USA
Today for having a poll that asked readers who their favorite “New Kid” was
(clearly Donnie, in my case).The New
Kids said that USA Today was profiting on their trademarked name. According to
the court, “[i]t is no more reasonably possible . . . to refer to the New Kids
as an entity than it is to refer to the Chicago Bulls, Volkswagens or the
Boston Marathon without using the trademark.” In the end, the court decided that
using the New Kids name in the poll was permissible use.

The court applied the following standard to determine what is permissible use when using someone's trademarked name:

“First,
the product or service in question must be one not readily identifiable without
use of the trademark; second, only so much of the mark or marks may be used as
is reasonably necessary to identify the product or service, and
third, the user must do nothing that would, in conjunction with the mark,
suggest sponsorship or endorsement by the trademark holder.” Id.

First, the Grand
Slam isn’t readily identifiable by any other name. Second, everyone uses it to describe
the achievement of running those four races, nothing more. Third, I don’t think anyone is implying
that Nick Clark has received sponsorship or endorsement by Steve Baugh. Nor do
I think anyone cares. He's made clear he believes the opposite.

In
conclusion, at present, the Grand Slam of Ultrarunning has no official state or
federal trademark protection. Mr. Baugh may have some very limited rights under
common law trademark because of prior use, but, even if we were to assume for the sake of argument that he does have common law rights, he almost certainly can’t
prevent people from talking about, discussing, or referring directly to the
“Grand Slam of Ultrarunning” as a way to describe those races. He can only prevent people from using the name to promote races or imply sponsorship or endorsement when none exists.

In the
end, Steve Baugh wants to preserve his role in the "Grand Slam" series. But it's unclear what he might hope to achieve by engaging in this kind of aggressive territorial behavior, other than generating dissent and disagreement. You can claim you own the trademark to the award for running those four races. That may or may not be the case. But you can't hope to claim ownership of the experience or the community's desire to recognize that accomplishment. Any such pretension is small-minded and petty.

I wonder if Mr. Baugh, using the same logic he is using with respect to "Grand Slam of Ultrarunning," can or should be using the names "Leadville Trail 100 Run," "Vermont 100 Mile Endurance Run," "Wasatch Front 100 Mile Endurance Run," or "Western States 100-Mile Endurance Run" to promote or explain his trophy. Maybe he has complex contractual agreements with each race spelling out name usage rights with each race. Or, maybe he doesn't...

I did the "Toy Slam of UltraRunning®™" [a purely imaginary and fictive conceit] in 1993 with WS and AC; for which I was handsomely rewarded by a chorus of "thank Gawd *thats* over with", followed by dead silence.

You know what likely holds way more bite than this silly "virtual land-grab" a.k.a. Grand Slam of Ultrarunning™ stuff...? Yep, I believe that would be a certain "Grand Slam of Breakfasts®™" (<-- also totally made up, though referring to piles of food that I'd like to eat right about now.) :)

Indeed Mike Place. As an aspirant Grand Slam finisher I have watched Ian and Nick go at it in great style. If Nick overtakes Ian I plan to shake his hand as the worthy holder of the record, as will Ian I am quite sure. So it seems Slam has, de facto, loosed it's legal bonds. As you say....self correcting.

As you can see now, there's quite a buzz about this, so thanks much for sharing your expertise. Pretty much everything that needed to be said has been said, so I hope Nick can just focus on his race and have fun.

My lingering confusion in general, however, is the fact that the term had been used "freely" for some time in the community and magazines, etc. And now it's being "claimed" by people who didn't necessarily even originate it! How does *that* work?I would consider things like (Grand Canyon) R2R2R, Mummy Mania/Mummy Kill, Long's Peak "Grand Slam" and "Radical Slam", Pawnee-Buchanan, Maroon Bells 4-Pass Loop...perhaps even FKT itself...to be similarly analogous situations. And clearly, Nick's WS/Hardrock "Double" got some attention -- heck, Karl was shooting for it this year. It would be utterly inappropriate for me or you to try to trademark any of those, yet it feels like that's what these guys have done for Grand Slam. Granted, the "concept" has a history (late 90's, best I can tell) of being "managed" -- but only after being "unofficial" for some years before that. Correct me if I'm wrong, but it seems like at the point they want to claim a trademark, they would need to come up with a *new* name that hadn't already been established -- but how is that proven?